Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 07/06/2018

BRYERS LLP

7 Gay Street

Bath BA1 2PH

REINO UNIDO

Application No:	017491011
Your reference:	T6168EU01
Trade mark:	SERVICELINK
Mark type:	Word mark
Applicant:	Uptake Technologies Inc 600 West Chicago Avenue, Suite 620 Chicago Illinois 60654 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 04/12/2017 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 05/02/2018, which may be summarised as follows.

1. The relevant consumers are the technical consumers in the management of industrial assets.

2. The syntax of the mark is unusual.

3. The Office has not provided examples to support its arguments

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

The applicant has requested the Office for a new opportunity to submit further submissions and arguments. However this request is being rejected. The applicant had two months to provide arguments and submissions, which it did. Another round of submissions would unnecessarily lengthen the examination proceedings. From the submissions provided by the applicant, the Office has enough information available to decide the case.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

The relevant consumers are the technical consumers in the management of industrial assets.

The applicant holds that the Office has erred in examining the relevant consumers of the services. The applicant argues that the consumers of the services are technical people in the management of industrial assets, and not the IT professionals. The applicant argues that the primary purpose of these services is more akin to the databases containing information regarding repair and maintenance of industrial assets.

The Office, does not find this argument convincing. The services applied for are specialised IT services and target IT professionals. Having said that, if one had to admit that the services target a different public, it still doesn’t change the findings of the Office, namely that the mark is descriptive and non-distinctive. In this regard the Office notes that, it believes that irrespective of the public, the mark in question cannot function as a trade mark, because the mark is descriptive and non-distinctive. The English speaking public in the EU, will understand the mark irrespective of their call or profession.

The syntax of the mark is unusual.

The applicant holds that the mark is usual, because the syntax is unusual. The applicant argues that the use of two nouns rather than descriptive lexicons such as adverbs and adjectives makes the mark memorable.

The Office however notes that there is nothing unusual about the syntax of the mark. The mark will be clearly understood by the English speaking consumers in the EU, and will be understood as meaning to connect or be connected to supply assistance to provide services. These are two very basic English words, the combination of which is considered to be descriptive and non-distinctive for the services applied for. There is a direct link between the services applied for and the mark in question.

The applicant argues that the mark is not related to the communication link or management of repair and maintenance. The Office submits that the mark is clear and unequivocal, and it will be understood as such by the English speaking part of the public in the EU. There is nothing distinctive about the mark, thus, the mark cannot function as a trade mark, because it will simply be perceived as a word which provides information about the kind and intended purpose of the services in question.

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

The Office has not provided examples to support its arguments

As regards the argument that it is up to the Office to show that other similar signs are used in the market, the Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

Therefore, by analogy it is obvious that the Office does not need to provide concrete examples of how the mark is used in the market, and can rely solely on dictionary reference, as it has been done in the case at hand.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 491 011 is hereby rejected for all the services claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Alistair BUGEJA